DETAILED ACTION
Summary
This is a non-final rejection for application 17/211,039. The amendment in the RCE dated 21 August 2026 is acknowledged.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 21 August 2026 has been entered.
Claim Rejections - 35 USC § 112
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 14 recites the (C11) component is included in 0.1-50 parts by mass with respect to 100 parts of the first matrix. Claim 14 depends upon Claim 12. Claim 12 recites that the (C11) component is included in 0.1-40 parts by mass with respect to 100 parts of the first matrix. Claim 14 recites a broader range than the claim upon which it depends, so Claim 14 fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 1-3, 5, 7, 10-14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over NAKAYAMA (JP-2016124811-A).
Regarding Claim 1, NAKAYAMA teaches a two-paste dental composition (Abstract) having a polymerizable monomer with an acidic group, a polymerizable monomer having no acidic group, a polymerization initiator, a polymerization accelerator (Abstract) and a silane coupling agent represented by formula (I):
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where R1 represents an organic residue having at least one functional group selected from the group consisting of a (meth)acryloyl group, a vinyl group and an epoxy group; R2 represents a hydroxyl group, a C1-C4 alkyl group, or a C1-C4 alkoxy group and R3 and R4 represent a hydroxyl group or a C1-C5 alkoxy group (Abstract). NAKAYAMA exemplifies KBE 502 gamma-methacryloxypropylmethyldiethoxysilane and KBE 503 methacryloxypropyltriethoxysilane ([0117]), each of which satisfies [Chemical formula 1] recited by the claim. (KBE 502: R3=methacryloxypropyl; R1=methyl; R2=ethyl; n=2 and KBE 503: R3=methacryloxypropyl; R2=ethyl; n=3).
NAKAYAMA does not exemplify one of the (A1) monomers recited by claim, exemplifying KBE 502 gamma-methacryloxypropylmethyldiethoxysilane instead, which is the methacryl version of the acryloylpropyl methyldiethoxysilane compound recited by the claim. NAKAYAMA generally teaches that its silane coupling agent contains a (meth)acryloyl group (Abstract, [0010]) which means that its silane component may contain an acryloyl group or methacryloyl group. It would be obvious to one of ordinary skill in the art to modify the examples of NAKAYAMA to use the acryloyl-group version of KBE502, acryloylpropyl methyldiethoxysilane, which is one of the (A1) monomers recited by the claim, based on the teachings of the specification.
NAKAYAMA teaches that the first agent of the two-paste curable composition includes a polymerizable monomer (a) having an acidic group, a polymerizable monomer (b) having no acidic group, a polymerization initiator (c) and filler (d) ([0012], Table 1). This corresponds to the “second paste containing a second matrix” as recited by the claim. NAKAYAMA exemplifies BPB and copper (II) acetate as its polymerization initiator ([0113]) which are both chemical polymerization initiators. NAKAYAMA further teaches the second agent of its two-paste composition may be composed of a polymerizable monomer (b) having no acid group, a basic filler (e), a polymerization accelerator (f) and a silane coupling agent (g) represented by general formula (I)(see Claim 1 rejection). This second agent taught by NAKAYAMA corresponds to the “first paste containing a first matrix” that is recited by the claim. Note that NAKAYAMA teaches the chemical polymerization initiator and the polymerization accelerator in different agents which matches the recitation of the claim.
NAKAYAMA teaches that its polymerizable monomer having no acidic group water-soluble ([0025]) and teaches many hydroxyl-group containing (meth)acrylate monomers ([0026]) which satisfy the (C1) component as recited by the claim. NAKAYAMA exemplifies HEMA (2-hydroxyethyl methacrylate) and Bis-GMA ([0112], Table 1).
NAKAYAMA teaches in Example 1 (Table 1), 10 parts KBE503 silane (3 alkoxysilyl groups, MW=290.43) and 20 parts of MDP (monomer having an acidic group ([0111])) and 40 parts bis-GMA, 25+90 parts D2.6E and 15 parts HEMA (all monomers not having an acidic group ([0112])) for a total of 200 parts. The compounding index in matrix is calculated to be 3*100(10/200)/290.43 ≈ 0.0516 which is within the range of 0.005 and 0.070 that is recited by the claim. NAKAYAMA does not teach that its composition contains any water or volatile organic solvent (Table 1).
NAKAYAMA further teaches that its composition contains filler and basic filler (Abstract) which satisfies the (F) requirement of the claim. NAKAYAMA teaches that its filler (d) and basic filler (e) is present in amounts of 10-80wt%, preferably 30-75 wt% based on the total weight of the composition ([0064]). The matrix as recited by the claim is presumed to be everything which is not filler, which corresponds to the remaining 25-70 wt%. Both ranges are within the 25-75wt% range which is recited for both the matrix and filler by the claim.
The formula (3) recited in the claim is the same as formula (1). The 0.0516 for the compounding amount index in matrix calculated above is the same as what would be calculated in Formula (3) and is within the 0.005-0.070 recited for Formula (3) by the claim.
NAKAYAMA teaches that its polymerizable monomer having an acidic group (a) is present in amounts of 1-50 parts, preferably 2-15 parts per 100 parts of polymerizable material in both parts ([0024]). In Example 1, NAKAYAMA teaches 20 parts acid-containing monomer MDP (Table 1) out of 100.751+106.6=207.351 total non-filler parts which calculates to 9.6 wt% which is within the range of 1-20wt% which is recited by the claim.
NAKAYAMA teaches that its polymerizable monomer having no acidic group (b) is present in both pastes ([0107]) with broad ranges of 1-50wt% and 10-99wt% for its water-soluble and hydrophobic types of this (b) component ([0031]). In Example 1, NAKAYAMA teaches 40+25+15+90=170 parts of this (b) component out of 207.351 total non-filler parts (Table 1). This corresponds to 82.0wt% of this (b) component which is within the range of 65-95 wt% which is recited for the (C) component by the claim.
NAKAYAMA teaches that its polymerizable monomer having no acidic group (b) is present in both pastes ([0107]) and the water-soluble type of this component is present in amounts of 1-50wt% ([0031]) relative to the amount of polymerizable material. NAKAYAMA teaches that hydroxyl-containing monomers can be used for its water-soluble monomers which do not contain an acidic group ([0025]). NAKAYAMA exemplifies the HEMA monomer (2-hydroxyethyl methacrylate)([0112]) in amounts of 15 parts, and the Bis-GMA monomer ([0112]) in amounts of 40 part (Table 1), for a total of 55 parts hydroxyl-containing monomers out of a total of 100.751 total non-filler parts of the individual paste and 207.351 total non-filler parts of the mixture of the two pastes (Table 1). This calculates to 54.6 wt% of the individual paste composition and 26.5wt% of the total mixed composition. These are within the 15-80 wt% recited for the individual paste and the 15-70 wt% recited for the mixed composition that are recited by the claim. NAKAYAMA does not exemplify the hydroxyl-containing monomer in the first matrix (the matrix without the acid-containing monomer), but NAKAYAMA teaches that both pastes of its invention may contain the polymerizable monomer having no acidic group ([0107]), and NAKAYAMA exemplifies amounts within range for a single paste and for the mixture of the two pastes, then it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to include the hydroxyl-containing monomer in both pastes in amounts within the range taught in its specification that are also within the range recited by the claim.
NAKAYAMA teaches that its silane component can have a (meth)acryloyl group (Abstract) and teaching many monomers which contain (meth)acryloyl groups. All the exemplified monomers include (meth)acryloyl groups ([0111], [0112]). In Example 1 (Table 1), NAKAYAMA teaches 10 parts KBE503 silane with a methacryloyl group and 190 parts (a) and (b) monomers for a total of 200 parts out of 207.351 non-filler parts. This calculates to 96.4wt% which is within the range of 50-99wt% which is recited by the claim.
NAKAYAMA teaches that the initiator components are present in amounts of 0.05-2 wt% ([0044]) which overlaps the recited range of 0.3-6 wt% for the (D) component. NAKAYAMA does not exemplify an amount of initiator that is within range, teaching examples that are just below (Table 1) but it would be obvious to one of ordinary skill in the art to modify the examples of NAKAYAMA and use amounts of initiator that are within the range that it teaches in its specification that are also within the range recited by the claim.
Regarding Claim 2, modified NAKAYAMA teaches the invention of Claim 1 where NAKAYAMA teaches a compounding index in matrix of 0.0516 which is within the range of 0.01 to 0.055 which is recited by Claim 2.
Regarding Claim 5, modified NAKAYAMA teaches the invention of Claim 1 above. All of the monomers in the examples taught by NAKAYAMA include methacryloyl groups ([0112], Table 1). NAKAYAMA teaches some silane coupling agents which include (meth)acryloyl groups such as (KBE 502 and KBE 503) ([0117]) and some that do not such as vinyltriethoxysilane, vinyltripropoxysilane, KBM 503 ([0117]). Claim 5 depends upon, and therefore includes, Claim 1. Claim 1 requires an (A1) silane contains a (meth)acryloyl group. A composition where all (i.e. 100%) of the monomers and all (i.e. 100%) of the silanes contain (meth)acryloyl or (meth)acrylamide groups is not within the 50-99.9 parts by mass per 100 parts that is recited by the claim.
NAKAYAMA teaches monomers which do not contain (meth)acryloyl or (meth)acrylamide groups, including generally those containing vinyl or styrene groups ([0014]), such as p-vinyl benzoic acid ([0021], styrene sulfonic acid ([0019]). NAKAYAMA does not exemplify these monomers, but it would be obvious to modify the examples of NAKAYAMA and include monomers without (meth)acryloyl or (meth)acrylamide in amounts of at least 0.1 mass% based on the teachings of the specification. This combination would drop the amount of (meth)acryloyl groups in the (A), (B), (C) components to below 99.9wt% which would satisfy the requirements of the claim.
Regarding Claim 7, modified NAKAYAMA teaches the invention of Claim 1. NAKAYAMA teaches that its filler may be surface treated in advance with a known surface treatment agent such as a silane coupling agent ([0058]). NAKAYAMA exemplifies a quartz powder filler treated with a silane coupling agent ([0114]) and a basic filler barium glass powder which is surface treated with a silane coupling agent ([0115]).
Regarding Claim 12, modified NAKAYAMA teaches the invention of Claim 1. NAKAYAMA teaches and exemplifies HEMA (2-hydroxyethyl methacrylate) ([0112], Table 1) which is one of the (C11) low-viscosity monomers used in the current invention (current spec: [0173] p. 70, first paragraph). The current specification is used as evidence to disclose that the HEMA monomer taught by NAKAYAMA has a viscosity of 8 mPa-s (current spec: [0173] p. 70, first paragraph). NAKAYAMA teaches that both parts of its composition may contain the polymerizable monomer having no acidic groups ([0107]). NAKAYAMA does not exemplify the HEMA monomer in the first matrix (the matrix without the acid-containing monomer) but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to include the HEMA monomer in both parts based on the teachings of the specification.
NAKAYAMA exemplifies 15 parts HEMA relative to 100.751 non-filler parts in the individual paste and 207.351 non-filler parts in the mixed composition (Table 1). This calculates to 14.9wt% of the individual paste and 7.23wt% of the mixed composition. Both of these are within 0.1-40 wt% recited by the claim. As discussed in the Claim 1 rejection, NAKAYAMA does not exemplify HEMA in the paste which does not contain the acidic monomer as is recited, but NAKAYAMA teaches that both pastes of its invention may contain polymerizable monomers having no acidic group ([0107]), such as HEMA. Since NAKAYAMA exemplifies a total amount of HEMA within the recited range and teaches that both pastes may have HEMA, then it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to include HEMA in both pastes in amounts within the range taught in its specification that are also within the range recited by the claim.
Regarding Claim 13, modified NAKAYAMA teaches the invention of Claim 1. NAKAYAMA teaches that its filler may be surface treated in advance with a known surface treatment agent such as a silane coupling agent ([0058]). NAKAYAMA exemplifies a quartz powder filler treated with a silane coupling agent ([0114]) and a basic filler barium glass powder which is surface treated with a silane coupling agent ([0115]).
Regarding Claim 14, modified NAKAYAMA teaches the invention of Claim 12. NAKAYAMA teaches that its filler (d) and basic filler (e) is present in amounts of 10-80wt%, preferably 30-75 wt% based on the total weight of the composition ([0064]). NAKAYAMA does not teach the weight ratio in each part, but in Example 1, NAKAYAMA teaches 215+15 parts filler out of 330.751 total parts in its first agent (second paste as recited) and 220+10 parts filler out of 336.6 total parts in its second agent (first paste as recited) which corresponds to 69.5 wt% and 68.3 wt% with the remaining matrix taking up the remaining 30.5wt% and 31.7wt%. Both of these are within the 25-75 wt% recited for both the matrix and filler for each of the two pastes.
NAKAYAMA teaches that its polymerizable monomer having no acidic group (b) is present in both pastes ([0107]). In Example 1, NAKAYAMA exemplifies 90 parts of this component (b) out of 106.6 total non-filler parts in its second agent (which corresponds to the first paste as recited) (Table 1). This calculates to 84.4 wt% which is within the 65-98wt% which is recited for the (C) component in the first matrix by the claim. NAKAYAMA exemplifies 40+25+15=80 parts of the non-acid-containing monomer in the first agent (corresponding to the second paste as recited) out of 100.751 total non-filler parts which calculates to 79.4wt% which is within the range of 65-95wt% for the (C) component in the second matrix as recited.
NAKAYAMA teaches that its polymerizable monomer having an acidic group (a) is present in amounts of 1-50 parts, preferably 2-15 parts per 100 parts of polymerizable material in both parts ([0024]). NAKAYAMA teaches that the acid-group-containing monomer is only present in its first agent ([0107]). In Example 1, NAKAYAMA teaches 20 parts of acid-containing monomer MDP out of 100.751 non-filler parts in its first agent (second paste as recited) which calculates to 19.9wt% which is within the 1-30 parts recited for the (B) component by the claim.
NAKAYAMA teaches that the initiator components are present in amounts of 0.05-2 wt% ([0044]) which overlaps the recited range. NAKAYAMA teaches in Examples 1 (Table 1) 0.501 parts initiator out of 100.751+106.6 non-filler parts. This calculates to 0.24wt% which is with the range of 0.1-5wt% which is recited for the (D) component by the claim.
NAKAYAMA teaches that the accelerator (f) is present in amounts of less than 10% relative to the amount of polymerizable material ([0069], [0073], [0077]). In Examples 1 (Table 1), NAKAYAMA exemplifies 3+0.5+3 = 6.5 parts accelerator (f) out of 100.751+106.6 non-filler parts. This calculates to 3.1wt% which is with the range for the (E) component which is recited by the claim.
NAKAYAMA does not teach the volumes of its two parts, but in the example 1, NAKAYAMA teaches a total of 330.751 parts by mass of its first agent (second paste as recited by the claim) and 336.6 parts of its second agent (first paste as recited) (Table 1). That calculates to a mass ratio of the first paste to the second paste of 1 to 0.983. The densities of the two pastes are required to determine the volume ratio from the mass ratio. NAKAYAMA does not teach the densities of each paste, but since the two pastes contain similar amounts of acrylic monomers (20+40+25+15=100 parts in first paste, 90 parts in second paste) and the same amount of similar inorganic filler (215+15=230 parts in the first paste, 220+10=230 parts in the second paste) which makes up the vast majority of each paste then one can presumes that the two pastes have similar densities. With similar densities, the 1 to 0.983 mass ratio taught by NAKAYAMA would correspond to a volume ratio which is about the same which would be within the 1 : 0.8 to 1.2 that is recited by the claim.
Claim 14 depends on Claim 12. The limitations on the (C11) components are already recited in Claim 12. As mentioned in the rejection above, NAKAYAMA teaches several hydroxyl-containing monomers and exemplifies the HEMA monomer (Table 1) which qualifies as a (C11) component as recited by the claim. The arguments that the recited amounts are an obvious modification of the teachings of NAKAYAMA are included in the Claim 12 rejections above.
Regarding Claim 21, NAKAYAMA teaches the invention of Claim 1. NAKAYAMA teaches that its composition can be suitably used as a self-adhesive cement ([0128], Claim 6).
Claims 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over NAKAYAMA (JP-2016124811-A) in view of WANG (US-20100099058-A1).
Regarding Claims 24-25, NAKAYAMA teaches the invention of Claim 10 above. NAKAYAMA teaches that its composition has an adhesive durability and is used for all dental adherends including dental glass ceramic restoration ([0011]). NAKAYAMA teaches a tensile adhesive strength test ([0121]) to test the performance of its composition when adhering two different substrates. NAKAYAMA teaches the need for adhesive material for fixing crown repair material to teeth ([0003]), so it is aware of the need for adhesive between different structures. NAKAYAMA does not teach that its dental adherend is a dental restoration material for cutting and machining which is made from glass-reinforced epoxy resin. WANG, in an invention of a method for dental restoration (Abstract), teaches creation of a dental abutment component which may utilize CAD/CAM (computer-aided design/computer-aided machining)([0043]) using polymeric material such as epoxy resin ([0052]) which are glass-fiber reinforced ([0057]). It would be obvious to one of ordinary skill in the art to modify the invention of NAKAYAMA with the teachings of WANG and use a CAD/CAM-machined glass-fiber-reinforced resin as its dental restoration adherend.
Response to Arguments
Applicant's arguments filed 21 August 2026 have been fully considered but they are not persuasive.
The amendment to Claim 1 removing a duplicate structure has addressed the issue objected to in the previous office action. This specific rejection has been withdrawn.
The amendment to Claim 1 removing the diacrylate compound has addressed the indefiniteness associated with that compound because it did not appear to satisfy the definition of [Chemical formula 1]. The 112(b) rejection for this claim and its dependents has been withdrawn.
The amendment to Claim 14 removing the (C1) limitation has addressed the issue where a broader statement of this limitation was recited in Claim 12 from which Claim 14 depends. The specific 112(d) rejection for this claim has been withdrawn. Upon further consideration, Claim 14 also recites a limitation on the (C11) component which is broader than the limitation recited in Claim 12. A new 112(d) rejection has been added for this Claim 14 limitation on (C11).
Applicant argues that its invention obtains superior results in obtaining good adhesive strength without reducing storage stability simultaneously and that NAKAYAMA does not exemplify the hydroxy-containing monomer in both parts of its composition. In response, NAKAYAMA generally teaches that both of its parts may contain the polymerizable monomer having no acidic group ([0107]). While NAKAYAMA does not exemplify the hydroxyl containing monomer in both parts, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures "including unpreferred embodiments" must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972). Therefore, it would have been obvious to one of ordinary skill in the art to utilize a hydroxyl monomer in both pastes given that NAKAYAMA teaches it in its specification. NAKAYAMA teaches excellent adhesive strength and long-term storage stability (Abstract, [0001]) and performs adhesive tests measurements comparing adhesive tests for samples that were stored for two weeks and two years ([0120])
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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